[Linux-aus] Linux Trademark

[Anthony Towns]

Hi all,

As you're all probably well aware Linux Australia, in cooperation with
the Linux Mark Institute, have been attempting to register "Linux"
as a trademark in Australia on behalf on Linus Torvalds.

The trademark application has been rejected, essentially on the grounds
that the term is generic. The examiner's reasoning is:

  "In this case, your client's trade mark is the word LINUX: a term used
  to refer to a particular computer operating system. In this respect,
  the trade mark is a very apt term to describe the goods and services
  your client has claimed in the field of computers and in turn
  possesses *_no_ inherent capability to distinguish in the
  marketplace*. As such, other traders with similar goods and services
  would need to use this term to describe their similar goods and
  services."

and, in particular,

  "The main test is whether other traders are likely to need to use the
  word LINUX, without improper motive, to describe their own goods and
  services."

Additionally, the application was rejected on the grounds that the
trademark "LINUX" would be "deceptively similar" to the trademark held
by IDG, on "LINUXWORLD" and "LINUXWORLD CONFERENCE & EXPO". Finally,
the submissions that we made as to prior use of the term were deemed
inadequate.


So, the question is where to go from here. Having "Linux" be deemed
"generic" actually satisfies half our goals: it means that it's not
possible for someone else to register it and start charging for use of
the term. So it would be quite possible to stop here and consider it
a win -- and it would mean Australians don't have to worry about LMI's
licensing regime, too.

The downside, though, and the other half of the goals, was protecting the
term "Linux" against abuse; and if it's an untrademarked, generic term,
that's not possible. That means that Microsoft can make an incompatible
product and call it Linux, then post benchmarks about how badly "Linux"
performs compared to Windows. One of the first uses of the US trademark
was in this vein -- namely shutting down a pornogrpahy site going by
the name "linuxchicks.org", ie deceptively similar to "linuxchix.org".

In a similar vein, it means that folks wanting to make products with
"Linux" in the name have to trademark the name themselves rather than
sublicensing use of the "Linux" mark through LMI. That's probably also
a loss, and is something Linus specifically brought up in his message
to lkml on the topic [0].

[0] http://lkml.org/lkml/2005/8/20/95


Successfully registering "LINUX" as a trade mark at this point would
require, in the words of the examiner:

    "*overwhelming convincing evidence* that the purchasing public and
    other operators in the computer trade recognise the word LINUX as a
    trade mark rather than the descriptive material that it obviously is,
    and only with the goods and services supplied by the applicant. In
    this case, considerable independent corroboration of distinctiveness
    is required, such as declarations from the broader public and trade
    sources (such as competing providers of computer goods and services)
    which show convincingly that the word LINUX, *on its own*, has
    become accepted by a substantial majority of persons as a trade mark
    at the time of filing."

There are also some further fees that are needed to continue the
application and get it re-reviewed if more evidence is supplied.


LMI are interested in persuing the application further; but the real
question is what the community thinks, and any further progress will
probably require written support of the trademark claim from LUGs, Linux
consultants, distributors, and most of the subscribers on this list, eg.
If we go ahead with this, it will probably require another round of mail
outs, which we'll hopefully be able to do better after our experience
with the last one.

We'll be having a teleconference with some LMI folks about this next
week at some ridiculous hour, so if there are any concerns that you
would like us to bring up regarding LMI's handling of the "LINUX" mark,
now would be a great time to mention them.

Please feel free to post feedback either onto the linux-aus list directly,
or privately to the committee via committee at lists.linux.org.au, or
directly to me or another committee member.

Cheers,
aj

-- 
Anthony Towns <secretary at linux.org.au>
Secretary, Linux Australia
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